Ex Parte Prigent et al

Patent Trial and Appeal Board

Apr 29, 2016

10552138 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/552,138 07/10/2006
24336 7590 05/03/2016
TUTUNJIAN & BITETTO, P,C
425 Broadhollow Road, Suite 302
Melville, NY 11747
FIRST NAMED INVENTOR
Nicolas Prigent
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PF030060 7177
EXAMINER
RUBIN, BLAKE J
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@tb-iplaw.com
sandy@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS PRIGENT, OLIVIER REEN
JEAN-PIERRE ANDREAUX, and CHRISTOPHE BIDAN
Appeal2014-005894
Application 10/552,138
Technology Center 2400
Before ERIC S. FRAHM, JOHN P. PINKERTON, and JEFFREY A.
STEPHENS, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 3-9, which constitute all the claims pending
in this application. Claim 2 has been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We reverse and enter a new ground of rejection.
Appeal2014-005894
Application 10/552,138
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphases added,
reads as follows (emphases added to contested limitations):
1. A device configured to belong to a community of
networked devices, the device comprising:
a provable identity and/or means for generating and/or
obtaining a provable identity;
means configured to store trust information about other
devices of the community having trust relationships with said
device;
means configured to store distrust information about other
devices of the community having had trust relationships with said
device in the past but now are not trusted by said device;
means for automatically synchronizing trust relationships
with any of the other devices belonging to said community based
on the stored trust and distrust information, and in a distributed
manner vvith said an}' other de-vice belonging to said commitnit}'.
The Examiner's Rejection
The Examiner rejected claims 1 and 3-9 under 35 U.S.C. § 102(e) as
being anticipated by Yeager et al. (US 2003/0028585 Al; published Feb. 6,
2003) ("Yeager"). Final Act. 2-5; Ans. 2-5.
Issue on Appeal1
Based on Appellants' arguments in the Appeal Brief (Br. 7-15) and
the Reply Brief (Reply Br. 6-17), the following principal issue is presented
on appeal:
1 Appellants present detailed arguments on the merits only with respect to
independent claim 1 (App. Br. 7-15; Reply Br. 6-17). Accordingly, we
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Application 10/552,138
Did the Examiner err in rejecting claims 1 and 3-9 as being
anticipated by Yeager because Yeager fails to disclose (i) "a provable
identity and/or means for generating and/or obtaining a provable identity,"
(ii) "means for automatically synchronizing trust relationships with any of
the other devices belonging to said community based on the stored trust and
distrust information, and in a distributed manner with said any other device
belonging to said community," and (iii) "means configured to store distrust
information about other devices of the community having had trust
relationships with said device in the past but now are not trusted by said
device," as recited in independent claim 1?
ANALYSIS
Means-Plus-Function Claim Interpretations
Before determining whether Yeager anticipates the claims, we must
first interpret the means-plus-function claim limitations contained therein.
"[T]he PTO may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability
determination." In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir.
1994). The Federal Circuit has held that applicants before the USPTO have
the opportunity and the obligation to define their inventions precisely during
proceedings before the USPTO. See In re Morris, 127 F.3d 1048, 1056-57
(Fed. Cir. 1997) (35 U.S.C. § 112, second paragraph, places the burden of
precise claim drafting on the applicant); In re Zietz, 893 F.2d 319, 322 (Fed.
Cir. 1989) (manner of claim interpretation that is used by courts in litigation
select claim 1 as representative of the group of claims 1 and 3-9, rejected as
being anticipated by Yeager.
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Application 10/552,138
is not the manner of claim interpretation that is applicable during
prosecution of a pending application before the USPTO); Sage Prods., Inc.
v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997) (patentee who
had a clear opportunity to negotiate broader claims during prosecution but
did not do so, may not seek to expand the claims through the doctrine of
equivalents, for it is the patentee, not the public, who must bear the cost of
failure to seek protection for this foreseeable alteration of its claimed
structure).
"[W]hen the disclosed structure is a computer programmed to carry
out an algorithm, 'the disclosed structure is not the general purpose
computer, but rather that special purpose computer programmed to perform
the disclosed algorithm."' In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir.
2011) (quoting WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d 1339, 1349
(Fed. Cir. 1999)); see also In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir.
1994) (en bane). In cases involving a special purpose computer-
implemented means-plus-function limitation, the Federal Circuit has
consistently required that the structure be more than simply a general
purpose computer or microprocessor and that the specification must disclose
an algorithm for performing the claimed function. See, e.g., Noah Systems
Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012); Aristocrat Techs.
Aust!. Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed. Cir. 2008).
The disclosure must be reviewed from the point of view of one skilled in the
relevant art to determine whether that person would understand the written
description to disclose the corresponding structure, material, or acts. Tech.
Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008);
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Application 10/552,138
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1211-12 (Fed. Cir. 2003).
In light of Appellants' Specification, we interpret the means-plus-
function limitations present in independent claim 1 as follows: 2
means for generating and/or obtaining a provable identity: an
algorithm performed between at least two user devices, each user device
comprising a CPU, a user interface, and a memory for storing, wherein the
first user device sends a request to the second user device, wherein the
second user device responds to the first user device assigning the first user
device an identity (Spec. 7, 11. 11-14; Spec. 9, 11. 20-32);
means configured to store trust information about other devices of the
community having trust relationships with said device: a CPU and memory
for storing (Spec. 7, 11. 11-14 );
means configured to store distrust information about other devices of
the community having had trust relationships with said device in the past but
now are not trusted by said device: a CPU and memory for storing (Spec. 7,
11. 11-14); and
means for automatically synchronizing trust relationships with any of
the other devices belonging to said community based on the stored trust and
distrust information, and in a distributed manner with said any other device
belonging to said community: an algorithm performed between at least two
user devices, each user device comprising a CPU, a user interface, and a
memory for storing, wherein the second user device provides the first user
2 Because there is no rejection under 35 U.S.C. § 112, second paragraph,
before us, we do not consider whether there is sufficient structure disclosed
in the Specification to render the means-plus-function limitations definite.
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device with all the trust relationship information it possesses (Spec. 7, 11. 11-
14; Spec. 11, 11. 27-38).
In light of Appellants' Specification, we interpret the means-plus-
function limitations of dependent claim 5 as follows:
means to exchange information with the other devices of the
community about devices trusted and/or distrusted by the other devices of
the community: a network interface (Spec. 7, 11. 14--15).
The Examiner's Anticipation Rejection
We have reviewed the Examiner's rejection (Final Act. 2-5; Ans. 2-
5) in light of Appellants' arguments in the Appeal Brief (App. Br. 7-15) and
the Reply Brief (Reply Br. 6-17) that the Examiner has erred, and the
Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 5-
8).
We agree with the Examiner (Ans. 2, 5-6) that Yeager teaches or
suggests a device comprising "a provable identity and/or means for
generating and/or obtaining a provable identity" because Yeager (i-f 112)
describes a private-public key pair utilizing signed certificates. It should
further be noted that Appellants have not responded to or refuted the
Examiner's new citation to paragraph 112 (Ans. 5--6) in the Reply Brief
(Reply Br. 9-10).
We also agree with the Examiner (Ans. 6-7) that Yeager teaches or
suggests "means for automatically synchronizing trust relationships with any
of the other devices belonging to said community based on the stored trust
and distrust information, and in a distributed manner with said any other
device belonging to said community" because Yeager's trust relationships
are decentralized as indicated in Yeager's title, "DISTRIBUTED TRUST
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Application 10/552,138
MECHANISM ~FOR DEC'ENT1L4LIZED NETWORKS" (emphasis
added). Yeager further describes (i-f 287) completely decentralized trust
relationships. Again, it should be noted that Appellants have not responded
to or refuted the Examiner's new citation to paragraph 287 in the Reply
Brief (Reply Br. 8).
However, we do not agree that the passages of Yeager (i-fi-f 103, 292,
365) relied upon by the Examiner (Ans. 7-8; Final Act. 3) teach or suggest
"means configured to store distrust information about other devices of the
community having had trust relationships with said device in the past but
now are not trusted by said device." Although it might be the case that
Yeager could store distrust information about other devices in the
community, we find no such disclosure in the passages cited the Examiner to
support the Examiner's position. We will not resort to speculation or
assumptions to cure the deficiencies in the Examiner's fact finding. See In
re Warner, 379F.2d1011, 1017(CCPA1967); see also In re Coley, 40 F.2d
982, 986 (CCPA 1930) ("Where there is such doubt, the scales should be
inclined toward the applicant.").
Therefore, we do not sustain the Examiner's rejection of independent
claim 1, as well as claims 3-9, which depend from claim 1 and are grouped
therewith, as being anticipated by Yeager.
CONCLUSION
The Examiner erred in rejecting claims 1 and 3-9 as being anticipated
under 35 U.S.C. § 102(e) by Yeager.
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DECISION
(1) We reverse the Examiner's anticipation rejection of claims 1 and
3-9.
(2) We also enter new a new ground of rejection under 37 C.F.R.
§ 41.50(b) and 35 U.S.C. § 103(a) for claims 1and3-9 as follows:
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103(a) for claims 1 and 3-9 as being obvious over Yeager.
With regard to claim 1, Yeager discloses a device configured to
belong to a community of networked devices (i1i1 48--49), the device
comprising: a provable identity and/or means for generating and/or obtaining
a provable identity (see means-plus-function interpretation supra; i1i149,
112); means configured to store trust information about other devices of the
community having trust relationships with said device (see means-plus-
function interpretation supra; i1i149, 57-58 (disclosing a CPU and memory
for storing)); means for automatically synchronizing trust relationships with
any of the other devices belonging to said community based on the stored
trust and distrust information, and in a distributed manner with said any
other device belonging to said community (see means-plus-function
interpretation supra; i1i1200, 287, 292).
In a similar embodiment, Yeager further discloses means configured
to store distrust information about other devices of the community having
had trust relationships with said device in the past but now are not trusted by
said device (see means-plus-function interpretation supra; i1i157-58
(disclosing a CPU and memory for storing), i-f 122 (disclosing certificate
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revocation lists)). It would have been obvious to one of ordinary skill in the
art to combine the primary embodiment of Yeager with the certificate
revocation lists because such a combination would have had the added
benefit of preventing untrusted devices from gaining access to the network.
With regard to claim 3, Yeager as previously modified further
discloses the information about devices comprises the provable identity of
said devices (i-f 118).
With regard to claim 4, Yeager as previously modified further
discloses said device is furthermore configured to store information
comprising proofs received from the other devices of the community that
said device is trusted by the other devices (i-f 119).
With regard to claim 5, Yeager as previously modified further
discloses said synchronizing means comprises means to exchange
information with the other devices of the community about devices trusted
and/or distrusted by the other devices of the community (see means-plus-
function interpretation supra; i1200).
With regard to claim 6, Yeager as previously modified further
discloses said device comprises: a first object capable of containing
identities of devices trusted by said device and trusting said device (i-f 65); a
second object capable of containing identities of devices trusted by said
device (i-f 68); and a third object capable of containing identities of devices
distrusted by said device (i1i171, 122).
With regard to claim 7, Yeager as previously modified further
discloses said device is capable of modifying the content of said first object
and/or said second object and/or said third object as a function of
information exchanged with other devices of the community (i-f 7 5).
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With regard to claim 8, Yeager as previously modified further
discloses said first object and/or said second object and/or said third object
are further configured to contain cryptographic material (i-f l 05).
With regard to claim 9, Yeager as previously modified further
discloses said first device is capable of banishing another device of said
community if the identity of said device to be banished is contained in the
first or the second object of said first device (i-f 365), said banish operation
comprising removing the identity of said device to be banished from said
first or second object and inserting said identity in said third object of said
first device (i-fi-f 122, 365).
Because Yeager discloses the disputed limitations under 35 U.S.C.
§ 103 (a), and not just in the passages cited in the Examiner's Final Office
Action, we designate our findings supra to be a new ground of rejection.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the
claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same
Record ....
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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